DCT

2:16-cv-03474

Telebrands Corp v. Ragner Technology Corp

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 2:16-cv-03474, D.N.J., 07/09/2018
  • Venue Allegations: Plaintiff alleges venue is proper in the District of New Jersey because Plaintiff’s headquarters is in the district, Defendant Tristar Products, Inc. has a principal place of business in the district, and Defendants conduct substantial business in the district. The complaint also notes that Defendants have previously filed patent infringement actions in the same district.
  • Core Dispute: Plaintiff seeks a declaratory judgment that its POCKET HOSE line of expandable water hoses does not infringe four patents owned or licensed by Defendants, that the patents are invalid, and that two of the patents are unenforceable due to inequitable conduct during prosecution.
  • Technical Context: The dispute centers on the technology of expandable and retractable hoses, which are designed to be lightweight and compact for storage when not pressurized with water, and to automatically extend to a full usable length when pressurized.
  • Key Procedural History: The complaint alleges an extensive history of litigation and patent office proceedings between the parties concerning competing expandable hose products. Plaintiff Telebrands notes it filed a petition for post-grant review of all claims of the ’057 patent. Most significantly, the complaint alleges that Defendants engaged in inequitable conduct during the prosecution of the ’076 and ’944 patents by copying claims from a third-party patent (U.S. Patent No. 8,291,941) more than one year after that patent had issued, in alleged violation of 35 U.S.C. § 135(b), and by failing to disclose this copying to the U.S. Patent and Trademark Office. The complaint further notes that the ’076 patent was subject to a supplemental examination and subsequent ex parte reexamination, during which the Patent Trial and Appeal Board allegedly noted the basis for the inequitable conduct claim.

Case Timeline

Date Event
2001-11-24 Earliest Priority Date for ’448, ’076, ’944 Patents
2009-06-23 U.S. Patent No. 7,549,448 Issues
2012-10-23 U.S. Patent No. 8,291,941 (allegedly copied from) Issues
2013-08-10 Priority Date for ’057 Patent
2014-04-25 Application for ’076 Patent Filed
2015-04-28 Application for ’944 Patent Filed
2015-05-05 U.S. Patent No. 9,022,076 Issues
2015-11-10 U.S. Patent No. 9,182,057 Issues
2016-06-15 Plaintiff Files Petition for Post-Grant Review of ’057 Patent
2016-06-21 U.S. Patent No. 9,371,944 Issues
2018-07-09 Complaint Filing Date

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 9,182,057 - "Retractable Elastic Bungee Hose," issued November 10, 2015

The Invention Explained

  • Problem Addressed: The patent background describes prior art expandable hoses as having non-elastic outer covers that must fold when the hose retracts. This folding is described as uncontrolled, leading to a "haphazard jumble of folded fabric" that is aesthetically unpleasing and can limit the hose’s retraction capability (’057 Patent, col. 1:35-42).
  • The Patented Solution: The invention proposes an outer cover that, like the inner elastic tube, is designed to expand and contract longitudinally. The outer cover is described as having a structure similar to that of a bungee cord, which allows it to stretch beyond its fully extended length under external tension and retract in a controlled manner, forming "evenly spaced and like-sized annular ridges" when collapsed (’057 Patent, Abstract; col. 2:21-44). This structure is intended to provide a cleaner appearance and a more predictable retraction process.
  • Technical Importance: This approach suggests a method for creating an expandable hose that retracts more uniformly and may be more durable, as the cover is designed to stretch rather than simply fold.

Key Claims at a Glance

  • The complaint seeks a declaratory judgment of noninfringement of "any valid claim" of the ’057 patent (Compl. ¶121). For the purpose of this analysis, independent claim 1 is representative.
  • Essential elements of Claim 1 include:
    • An inner elastic hose capable of stretching and having a tendency to return to its natural length.
    • A tube-shaped outer cover adapted to longitudinally extend from a retracted length to an extended length in response to fluid pressure.
    • The outer cover is further adapted to respond to an external stretching force by extending to a stretched length beyond the extended length and radially contracting to a smaller diameter.
  • The complaint does not explicitly reserve the right to assert dependent claims, as it seeks a declaration covering all claims.

U.S. Patent No. 9,022,076 - "Linearly Retractable Pressure Hose Structure," issued May 5, 2015

The Invention Explained

  • Problem Addressed: The patent describes prior art retractable hoses as having a flexible body that bulges outward between the coils of an internal or external biasing spring. This bulging portion is identified as being susceptible to abrasion, wear, and puncture, as it is the primary surface that makes contact with the ground (’076 Patent, col. 1:47-60).
  • The Patented Solution: The invention proposes indenting the hose body inward between the coils of the biasing spring. This creates a "helical shaped trench" or indentation. By placing the hose body substantially within the protective radius of the spring coils, the spring itself becomes the primary contact surface, shielding the softer hose material from abrasion (’076 Patent, col. 2:1-15; Abstract). This design also purports to allow for a more compact retracted state, as the hose material folds inside the spring coils rather than bunching up outside.
  • Technical Importance: This design offers a potential solution to the durability problems of early-generation expandable hoses by using the spring structure as a protective exoskeleton.

Key Claims at a Glance

  • The complaint seeks a declaratory judgment of noninfringement of "any valid claim" of the ’076 patent (Compl. ¶132). For the purpose of this analysis, independent claim 1 is representative.

  • Essential elements of Claim 1 include:

    • A flexible elongated outer tube made from a fabric material.
    • A flexible elongated inner tube formed of an elastic material.
    • First and second couplers secured to the ends of the tubes.
    • The inner tube providing a biasing force sufficient to retract the hose.

  • The complaint seeks a declaration covering all claims.
    Multi-Patent Capsule: U.S. Patent No. 9,371,944

  • Patent Identification: U.S. Patent No. 9,371,944, "Multi-Layer Pressure Actuated Extendable Hose," issued June 21, 2016.

  • Technology Synopsis: As a continuation of the application that led to the ’076 patent, this patent similarly describes a self-actuating, extendable hose with a biasing element (e.g., a spring) and a sealing layer (’944 Patent, Abstract). The detailed description focuses on the multi-layer construction of the hose body, including specific weave patterns and fiber orientations designed to manage hoop stress and longitudinal stress when the hose is pressurized (’944 Patent, col. 21:45-67).

  • Asserted Claims: The complaint seeks a declaration as to all claims; independent claims are 1 and 6 (’944 Patent, col. 47:53-67, col. 48:26-50).

  • Accused Features: The complaint accuses Telebrands' "POCKET HOSE products" generally of infringement (Compl. ¶9).
    Multi-Patent Capsule: U.S. Patent No. 7,549,448

  • Patent Identification: U.S. Patent No. 7,549,448, "Linearly Retractable Pressure Hose," issued June 23, 2009.

  • Technology Synopsis: This patent, which shares a priority claim with the ’076 and ’944 patents, discloses a general structure for a "linearly self-actuated hose" for both pressure and vacuum applications (’448 Patent, Abstract). The core concept is a hose with an integrated biasing spring extending along its length that opposes the force created by a pressure differential between the interior and exterior of the hose (’448 Patent, col. 1:50-60). The extension and retraction are controlled by modulating the fluid pressure within the hose against this spring bias.

  • Asserted Claims: The complaint seeks a declaration as to all claims; independent claims are 1, 13, 19, and 20 (’448 Patent, col. 23:57 - col. 26:29).

  • Accused Features: The complaint accuses Telebrands' "POCKET HOSE products" generally of infringement (Compl. ¶11).

III. The Accused Instrumentality

Product Identification

  • The complaint identifies Plaintiff's "POCKET HOSE products" as the instrumentalities for which it seeks a judgment of non-infringement (Compl. ¶31).

Functionality and Market Context

  • The complaint describes the POCKET HOSE products simply as "expandable hoses" (Compl. ¶31). It does not provide any specific technical details regarding their construction, materials, layers, or mechanism of expansion and retraction. The complaint states these products are sold nationwide through various channels including direct response advertising and national retail outlets (Compl. ¶31).
  • It is alleged that the POCKET HOSE products "compete directly with Defendants' FLEX-ABLE HOSE products" (Compl. ¶47).

IV. Analysis of Infringement Allegations

No probative visual evidence provided in complaint.

The complaint is an action for declaratory judgment of non-infringement and does not set forth an affirmative infringement theory against the POCKET HOSE products. It makes only conclusory statements that Telebrands has not infringed any valid claim of the patents-in-suit (Compl. ¶¶121, 132, 160, 189). The complaint provides no claim charts or element-by-element analysis mapping patent claims to the features of the POCKET HOSE products.

Identified Points of Contention

  • Given the lack of specific infringement allegations, the central technical disputes, should they be litigated, may revolve around the fundamental architecture of the POCKET HOSE products as compared to the patented technologies.
  • Scope Questions: A primary question for the ’057 patent may be whether the POCKET HOSE’s outer cover is "designed to stretch beyond its fully extended length" in the manner of a bungee cord, as claimed, or if it is a non-elastic fabric cover more characteristic of the prior art cited in the patent. For the ’076 patent and ’944 patent, a key question may be whether the POCKET HOSE body is indented radially inward between the coils of a biasing spring, as claimed, or if it utilizes a structure that bulges outward.
  • Technical Questions: The complaint does not provide evidence regarding the specific multi-layer construction, fiber orientation, or retraction mechanism of the POCKET HOSE. A factual dispute may arise as to whether the POCKET HOSE achieves its expandable function through the specific interplay of an elastic inner tube and a constraining or stretching outer layer as described in the various patents, or through an alternative technical approach.

V. Key Claim Terms for Construction

’057 Patent: "outer cover...adapted to respond to an external stretching force...by...longitudinally extending to a stretched length beyond the extended length" (Claim 1)

  • The Term: "stretched length beyond the extended length"
  • Context and Importance: This term is central to distinguishing the ’057 patent’s invention from prior art hoses with inelastic outer covers. The definition will determine whether a cover that exhibits any degree of elasticity under high tension infringes, or if it must possess the specific bungee-like stretchability described in the specification. Practitioners may focus on this term because it defines the novel functional behavior of the claimed outer cover.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The claim language itself does not quantify the amount of stretch required "beyond the extended length," which could support an argument that any measurable, intentional stretchability beyond the normal pressurized length meets the limitation.
    • Evidence for a Narrower Interpretation: The specification repeatedly analogizes the outer cover to that of a "bungee cord" and describes its ability to "be stretched significantly even after reaching an apparent maximum length from fluid pressure alone" (’057 Patent, col. 2:16-21). This repeated reference to a specific structure (bungee cord) could be used to argue for a narrower construction limited to covers with substantial, bungee-like elasticity.

’076 Patent: "a flexible elongated inner tube...providing a biasing force sufficient to retract the hose" (Claim 1)

  • The Term: "flexible elongated inner tube...providing a biasing force"
  • Context and Importance: This term appears to assign the retraction function (the "biasing force") to the inner elastic tube itself, rather than to a separate spring element as described in the patent's own background and detailed description (’076 Patent, col. 1:40-42, col. 3:56-59). The construction of this term is critical because if the "inner tube" is interpreted as the sole source of the biasing force, it may present a significant disconnect with the specification's disclosure of a separate biasing spring. Practitioners may focus on this term as it raises potential validity questions under 35 U.S.C. § 112.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: A party might argue that in the context of the entire hose structure, the "inner tube" in combination with the outer fabric creates a system where the tube's elasticity provides the biasing force, even if a separate spring is also present.
    • Evidence for a Narrower Interpretation: The specification consistently describes the biasing means as a separate element, such as a "helical spring" (’076 Patent, Fig. 1A, element 36; col. 3:56), and distinguishes it from the inner "sealing layer" (col. 4:10-12). This could support an argument that the claim, by attributing the biasing force to the inner tube alone, is not supported by the written description.

VI. Other Allegations

  • Indirect Infringement: The complaint makes conclusory denials of induced and contributory infringement (Compl. ¶¶122, 123, 133, 134, 161, 162, 190, 191). It provides no specific facts for analysis.
  • Willful Infringement: This allegation is not made by the Plaintiff.
  • Inequitable Conduct: The complaint contains extensive allegations of inequitable conduct against the ’076 and ’944 patents. The core allegations are:
    • Applicants copied claims (or near-exact copies) from U.S. Patent No. 8,291,941, which is licensed to Plaintiff Telebrands (Compl. ¶¶64, 94-95).
    • This copying allegedly occurred in applications filed more than one year after the ’941 patent issued, which Plaintiff alleges violates the statutory bar of 35 U.S.C. § 135(b) (Compl. ¶¶65-66, 96-97).
    • Plaintiff alleges that the applicants and their attorneys knew this information was material to patentability but intentionally concealed it from the USPTO with an intent to deceive the agency into granting the patents (Compl. ¶¶69-73, 98-102, 138, 167).
    • The complaint further alleges that misrepresentations were made to the USPTO during a subsequent supplemental examination of the ’076 patent in an attempt to "cleanse" the patent of the alleged inequitable conduct (Compl. ¶¶76-78).

VII. Analyst’s Conclusion: Key Questions for the Case

  • A central legal issue will be one of enforceability: Does the evidence support the allegation that the applicants for the ’076 and ’944 patents engaged in inequitable conduct by intentionally deceiving the U.S. Patent and Trademark Office regarding the alleged copying of claims from an issued patent outside the one-year statutory window?
  • A key question of claim construction and validity will be whether the phrase "inner tube...providing a biasing force" in claim 1 of the ’076 patent is adequately supported by the specification, which consistently describes the biasing element as a separate spring, raising a potential written description issue under 35 U.S.C. § 112.
  • A core, unresolved factual question for the infringement portion of the case will be one of structural identity: Although not detailed in the complaint, the dispute will ultimately depend on whether Telebrands’ POCKET HOSE products are built with the specific inward-indented structure of the ’076/’944 patents or the specialized stretchable "bungee" cover of the ’057 patent, or if they employ a distinct, non-infringing design.